New tool for attacking cyberpiracy
Rod Berman
This post was written by Rod S. Berman, Esq. and Jessica Bromall Sparkman, Esq.
Recent decisions in Academy of Motion Picture Arts and Sciences (“AMPAS”) v. GoDaddy.com, Inc., CV 10-03738 (C.D. Cal.), lay the foundation for brand owners to skip the haggle with domain registrants, and take their issues with infringing domain names straight to the domain name registrar.
AMPAS, the non-profit most famous for organizing the Academy Awards, owns a number of federally registered trademarks, including ACADEMY AWARDS and OSCARS.
GoDaddy.com, Inc. is one of the world’s leading domain name registrars. GoDaddy offers services in addition to its registration services, and at issue in the instant lawsuit is GoDaddy’s Parked Pages Program (the “Program”). If a domain name registrant does not associate its domain name with a website after it is registered, GoDaddy will automatically enroll the domain name into the Program, and will then associate the domain name with a web page that contains revenue generating links and advertisements related to the subject matter of the domain name. Each “click” on a link or advertisement generates revenue for GoDaddy. If the registrant chooses, it can pay a fee and share in the revenue.
Jessica Bromall Sparkman
The Anticybersquatting Consumer Protection Action (“ACPA”) makes it illegal, under certain circumstances to “register,” “traffic in” or “use” a domain name that is: (1) confusingly similar to a distinctive trademark; or (2) dilutive of a famous trademark. 15 U.S.C. § 1125(d)(1). The ACPA provides for statutory damages of up to $100,000 for each domain name. However, the ACPA also includes a safe harbor provision that provides immunity for domain name registrars for claims arising out of the “registration or maintenance” of a domain name, absent a showing of bad faith. 15 U.S.C. § 1114(2)(D)(iii).
AMPAS found more than 300 domain names incorporating its federally registered trademarks, all registered with GoDaddy, and, it alleged all with revenue generating “parked” GoDaddy pages. Because of the safe harbor provision, the usual course is to take action against each domain name registrant individually. AMPAS, however, sued GoDaddy directly, alleging that GoDaddy itself violated the ACPA by enrolling the domain names in the Program.
Trial is set for August. The Court, however, has already determined that the safe harbor provisions of the ACPA do not apply to GoDaddy’s administration of the Program, and also found that the Program constituted “using” and “trafficking” in domain names within the meaning of the ACPA. (Dkt. 491, p. 11-15).
The Court also made clear that determining whether an accused domain name is “confusingly similar” to the brand owners mark did not require the complex weighing of factors used in a traditional likelihood of confusion analysis. Instead, the Court need only engage in a facial comparison between the accused domain name and plaintiff’s trademark, comparing the domain name and the mark with regard to sight, sound, and meaning. (Dkt. 491, p. 22).
Additionally, the Court clarified that for an accused domain name to be found “dilutive of” a famous mark, the brand owner need not prove actual dilution, but instead, need only show that the accused domain name had a tendency to dilute a its famous mark. (Dkt. No. 491, 25-26).
Most recently, the Court held that GoDaddy was not entitled to a jury trial on AMPAS’s ACPA claim, for either injunctive relief or assessment of statutory damages. In making this decision, the Court distinguished the ACPA from the Copyright Act, which affords a right to a jury trial for on assessment of statutory damages; unlike the Copyright Act, which merely codified existing common law action in which a jury trial had always been available, the ACPA created “a new statutory cause of action to address a new problem: cybersquatting.” (Dkt. No. 656, 4-6).
The Court has already determined that each of AMPAS’s marks are distinctive, and that more than 80 of the accused domain names are confusingly similar to AMPAS marks as a matter of law. What remains for trial is, among other things, a determination of whether GoDaddy acted in bad faith, a requirement for liability under the ACPA. While there has not yet been a definitive ruling from a federal court on this point, it is worth noting that use of domain names with parked pages has long been considered evidence of bad faith in UDRP proceedings.
If AMPAS is successful, at least for domain names used with parked pages, brand owners can now consolidate their domain name grievances and bring them directly to the registrar. Consolidation increases the potential damage award the registrar faces: up to $100,000 for each domain name. Further, because neither a complex likelihood of confusion analysis, nor a jury trial is required, it will be easier to control the cost of a trial.
Brand owners: be sure to keep a record showing accused domain names’ participation in the Parked Pages Program, or something similar. Registrars: beware.
Rod Berman is chairperson of the Intellectual Property Law Group with Jeffer Mangels Butler & Mitchell. His practice focuses on patent, trademark, trade dress, copyright, unfair competition and internet responsibilities. Berman represents many nationally and internationally known clients, and has been involved in a number of published patent, trademark and copyright cases in a wide variety of industries.
Jessica Bromall Sparkman is a partner with Jeffer Mangels Butler & Mitchell. She represents clients in all facets of trademark and copyright law, including litigation, prosecution, domain names, opinions, counseling, acquisition, and portfolio management. She litigates trademark, unfair competition, copyright, patent, trade secret, and privacy rights cases in state and federal court, as well as the Trademark Trial and Appeal Board of the USPTO.
